Blog

28
May

ICANN’s Approval of ACDR as UDRP Provider Leaves Standard Contracts Issue Unresolved

The Arab Center for Dispute Resolution (ACDR) has been approved as a UDRP provider by ICANN’s Board of Directors. However, the language of the Board resolution of approval leaves unresolved the critically important issue of whether all UDRP providers will be placed under a standard and enforceable contractual agreement.

The Board action took place during its meeting of May 18th, with the full text available at http://www.icann.org/en/groups/board/documents/resolutions-18may13-en.htm#1.d.

The portion relevant to the issue of provider contracts and uniformity of UDRP implementation states:

Other commenters suggested that ICANN develop contracts with each of its UDRP providers as a means to require uniformity among providers. Contracts have never been required of UDRP providers. On the issue of uniformity among providers, however, the ACDR’s proposal does two things: first, highlighted areas where risk of non-uniform conduct was perceived (such as issues with commencement dates and definitions of writings) have been modified; second, the proposal now includes an affirmative recognition that if ICANN imposes further requirements on providers, the ACDR will follow those requirements; third, the ACDR has revised a specific portion of its Supplemental Rules that was highlighted by commenters as a potential risk to uniformity. This is a positive advancement and helps address concerns of ICANN’s ability to, in the future, identify areas where uniformity of action is of its obligation to abide by ICANN modifications that could enhance uniformity among providers. (Emphasis added)

ICA has continuously been the leading voice in calling for all UDRP providers to be placed under a standard contract (see http://internetcommerce.org/ACDR-UDRP_Comment_Letter). With all respect, the fact that “contracts have never been required of UDRP providers” is exactly the problem we seek to fix, as it is the lack of standard requirements and flexible yet effective enforcement mechanisms that leads to divergence in UDRP administrative practice and the encouragement of forum shopping.

But we hope that the Resolution favorable citation of ACDR’s willingness to abide by further ICANN-imposed requirements on UDRP providers as an important step toward assuring uniformity is a signal that the contracts issue may soon be addressed. Certainly, the contracts for arbitration providers precedent has now been set by ICANN’s recent confirmation that providers of Uniform Rapid Suspension (URS) will be placed under contract – and so far, both of the announced URS providers are existing UDRP providers (see http://internetcommerce.org/URS_Contracts_Coming).

The Resolution also contains another passage worthy of comment:

ICANN’s consideration of the ACDR’s proposal also highlights the import of accountability to the community. After the community requested the opportunity to see the proposal again prior to approval, the Board agreed and asked staff to proceed with a further comment period. In addition, the Board also requested that staff report to the community on how ICANN’s earlier consideration of UDRP provider uniformity issues was concluded. As a result, a briefing paper has been prepared and will be publicly posted. (Emphasis added)

Again, ICA took the lead in requesting that the revised ACDR application be subjected to a new round of public comment (see http://internetcommerce.org/ACDR_UDRP and http://internetcommerce.org/ACDR-UDRP_Board_Deferral) and we appreciate that the Board did so. We also look forward to reviewing the staff paper on UDRP uniformity issues as soon as it is made available. But we remain committed to the position that, especially in the case of a non-profit entity like ICANN that can only exercise authority via contracts, the development of a standard UDRP provider contract is essential and even more important today as UDRP providers proliferate and more than one thousand new gTLDs are about to enter the DNS.

14
May

ICANN Response to ICA: URS Providers will become Contracted Parties

Responding to questions posed by ICA Counsel Philip Corwin at the Public Forum in Beijing, ICANN is now on the record that it is developing a standard contract for all providers of the new Uniform Rapid Suspension (URS) rights protection mechanism (RPM) for new gTLDs, and that more URS providers will be selected. This action sets a strong precedent for ICA’s long sought goal of placing UDRP providers under a standard contract.

Those answers were provided through a May 10th ICANN Blog post from Board Chairman Steve Crocker, “Answering Your Questions” (http://blog.icann.org/2013/05/answering-your-questions/), that links to the full set of responses prepared by ICANN Staff (http://beijing46.icann.org/meetings/beijing2013/presentation-public-forum-responses-11apr13-en.pdf). The URS response appears at page 6 as follows:

As regards Uniform Rapid Suspension (URS) providers, will there be a contract developed that goes beyond the non-enforceable memorandum of understanding? Will there be other URS providers?

Yes, a contract is being developed and additional URS providers will be added.

                                    

The full transcript of the Beijing Public Forum can be found at http://beijing46.icann.org/meetings/beijing2013/transcript-public-forum-11apr13-en.pdf, with Corwin’s questions and remarks at pages 93-94:

PHILIP CORWIN: Good afternoon. Philip Corwin, again, this time speaking on behalf of the domain name investors and developers of the Internet Commerce Association. I have two questions relating to Uniform Rapid Suspension, one of the two new rights protection mechanisms for new TLDs.

The first refers to the fact that the STI-RT unanimously recommended that URS providers be placed under contract, and then the board unanimously adopted all of its recommendations regarding the URS. And, yet, the National Arbitration Forum which had been selected as an URS provider is bound to ICANN only by a two-page memorandum of understanding with no enforcement provisions. So the first question is: Will there be a contract developed that goes beyond that non-enforceable memorandum of understanding?

The second relates to: Will there be other URS providers? The press release at the time NAF was announced said it was the first. And yet I have spoken to other highly qualified applicants who applied to be providers, and they have been able to get no response from ICANN staff regarding if or when their applications may ever be acted upon.

So any clarification on those points would be appreciated.

And I do want to thank ICANN for the fact — and note that we were able to get a U.R.S. provider at the projected price point without any further reduction or modification of the rights of registrants under the URS. And we are very appreciative of that. Thank you.

 

On April 19th ICANN announced that, in addition to NAF, the Asian Domain Name Dispute Resolution Centre (ADNDRC) had been appointed as the second URS arbitration provider, and that ICANN expected to announce one or more additional providers in the near future (see http://www.icann.org/en/news/announcements/announcement-2-19apr13-en.htm).

ICA believes that it is extremely important to place all the providers for this new RPM under a standard contract with sound enforcement provisions to ensure uniform application and fair treatment of registrants as well as to prevent forum shopping.

While the fact that there will be a contract is good news, what’s in it is critically important. We presume that ICANN will put the draft out for public comment, as it does for all new or revised contractual agreements (for example, the currently pending revised Registrar Accreditation Agreement (RAA) and New gTLD Registry Agreement (RA) are both currently out for comment). When that posting occurs ICA will carefully review its provisions and submit relevant comments.

As both NAF and ADNDRC are both current providers of UDRP arbitration services, we believe that placing their URS services under contract sets a clear and strong precedent for implementing the same type of standard enforceable agreement for the UDRP. ICA continues to strongly believe that ICANN should not accredit any new UDRP providers until such a standard contract has been developed and put in place.

7
May

NCSG Cites ICA in Request for ICANN Board Reconsideration of TMC Claims “Trademark + Fifty” Decision

On April 19, 2013 ICANN’s Non-Commercial Stakeholders Group (NCSG) filed a formal Request for Reconsideration with ICANN’s Board Governance Committee to review a unilateral staff decision to expand the scope of the Trademark Clearinghouse (TMC) claims service for new gTLDs. That decision would allow trademark owners to include up to 50 additional typographical variations of each accepted trademark in the TMC database (letter at http://www.icann.org/en/groups/board/governance/reconsideration/request-gross-19apr13-en.pdf).

The claims service serves two purposes – conferring the ability for trademark owners to participate in an advance sunrise registration period at each new gTLD, and generating automated warning letters to potential registrants that a domain they are seeking to generate was a registered trademark – or, under the adopted 50-plus rule, had been the subject of a prior UDRP or judicial enforcement action. That latter aspect is particularly worrisome because, as NCSG Chair Robin Gross explained in a related article:

Under staff’s plan, large trademark holders that register in the clearinghouse will be provided thousands of derivations of their trademarks since each separate country’s registration of the same trademark provides the brand owner with an additional 50 entries in the TMCH.(Emphasis added) http://www.circleid.com/posts/20130501_icann_board_asked_to_review_decision_to_expand_trademark_rights/

That means that the potential registrant of an intended website at one of the 1400 new gTLDs, seeking to use a domain name having no trademark protection and with no intent to infringe, might nonetheless receive a warning of potential infringement – a warning that might later be cited as evidence of bad faith registration by an aggressive trademark owner in a UDRP or URS filing. This would constitute an unjustified expansion of trademark rights – which ICANN stated as the basis for its prior position that it lacked the power to adopt such a policy – and would undoubtedly halt many perfectly valid domain registrations from ever taking place at new gTLDs. It’s not even clear whether a potential registrant receiving the warning would be told if the intended domain was an actual trademark or just a typo.

Ms. Gross’ article cites a March 22nd ICA posting in which we recounted the history of this issue – including repeated ICANN statements that such expansion was beyond its powers and raised policy matters that must be addressed by the GNSO Council rather than staff – and we observed “that it is difficult to justify adoption of a mechanism that flies in the face of ICANN’s own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speech….It’s all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.” (http://internetcommerce.org/ICANN_Amnesia)

As for what happens now that the request for reconsideration has been filed, Ms. Gross’ article explains:

ICANN’s Board Governance Committee has thirty days in which to make to a recommendation to ICANN’s Board of Directors regarding the NCSG’s Request for Reconsideration or report to the Board on why no final recommendation is available and provide a timeframe for making a final recommendation on the matter. ICANN’s entire Board should consider the recommendation of the Board Governance Committee at its next regularly-scheduled Board meeting…NCSG requests that the Board reinstate the community-developed policy of giving trademark holders rights to include exact matches of their trademark only in the TMCH, which was the policy stated in ICANN’s Applicant Guidebook when ICANN accepted applications for new domains.

ICA commends the NCSG for filing this important request that ICANN observe proper decision-making procedures. We fervently hope that the Board Governance Committee will take the request seriously and recommend that the full Board reverse this unwarranted staff decision. On both procedural and substantive grounds, it is clearly the correct call to return this matter to the full GNSO Council and let it perform its policymaking role. This is a decision for stakeholders, not staff.

26
Apr

ICA Opposes ICANN Proposal to Slash UDRP Response Time

ICA just told ICANN that we strongly oppose an Initial Report that proposes to effectively reduce the time that a registrant has to respond to a UDRP by up to one-third.

The current UDRP requires a complainant to provide the registrant of the allegedly infringing domain with a copy of the complaint at the same time it is submitted to the UDRP arbitration provider. The Report proposes that this be eliminated to reduce “cyberflight” when a registrant switches the domain to a new registrar to avoid the UDRP. But it fails to provide any verified data on the incidence of cyberflight. So all registrants would face termination of a basic procedural protection because of what may be a statistical anthill of bad acts.

The Report proposes that the registrant should henceforth receive notice of the proceeding from the UDRP provider once the action has been commenced. But there’s generally a one to two week delay between the initial filing and the formal commencement – so adoption of the proposal would effectively amount to up to a one-third reduction in the time that the registrant has to secure competent counsel and prepare a defense. This seems grossly unfair – especially as the complainant has all the time in the world to draft the complaint, chooses which arbitration forum to file in, and controls its time of filing (say on Christmas Eve or the beginning of summer holidays).

If the Working Group that prepared the report can produce verifiable data showing that cyberflight is a problem of substantial proportions, ICA has proposed two alternative approaches that would address that abuse without reducing a registrant’s response time.

The reply period on this matter remains open until May 17th – and domain registrants who share our concern should visit the issue webpage at http://www.icann.org/en/news/public-comment/locking-domain-name-15mar13-en.htm and then submit comments to mailto:comments-locking-domain-name-15mar13@icann.org .

On the overall subject of defining a domain “lock” for UDRP purposes and standardizing how registrars impose locks, ICA generally supported the Report’s recommendations so long as a registrant retains control of the domain’s DNS, the domain considers to resolve, and registration renewals are not adversely affected. Our response also reiterated the need for ICANN to initiate consideration of overall UDRP reform – this Report stems from a December 2011decision by ICANN’s Generic Names Supporting Organization (GNSO) to initiate work on the UDRP domain lock issue while deferring the initiation of any general review of the UDRP until 18 months after the first new gTLD is added to the root. With the first new gTLD unlikely to open until the second half of this year, that means that UDRP reform won’t commence until at least 2015, despite being the only ICANN consensus policy that has never undergone review.

Our full letter follows—                                                    

 

VIRTUALAW LLC

Philip S. Corwin, Founding Principal
1155 F Street, NW  Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
psc@vlaw-dc.com

 

                                                                                                April 26, 2013

 

By E-Mail

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Locking of a Domain Name Subject to UDRP Proceedings – Initial Report

Dear ICANN:

I am writing on behalf of the members of the Internet Commerce Association (ICA). ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.

These comments reflect our views on the “Locking of a Domain Name Subject to UDRP Proceedings – Initial Report” that was posted for public comment on March 15, 2013 at http://www.icann.org/en/news/public-comment/locking-domain-name-15mar13-en.htm.

 

 

Executive Summary

The major points made in this comment letter are:

  • We have no objections to establishing a standard definition of “lock” in relation to a domain subject to a UDRP proceeding (so long as the definition clarifies that a lock shall not impair a domain’s resolution or the ready ability to renew it) as well as uniform procedures to be followed by re
    gistrars for domain locking as a consequence of a UDRP filing. Such standards will provide certainty to all affected parties in regard to what is already a widespread industry practice that is implicitly called for by current UDRP Rules.
  • However, we strongly object to the proposed deletion of the current UDRP requirement that the complainant shall provide the respondent domain registrant with a copy of the complaint at the same time it is submitted to the UDRP provider, on the ostensible grounds that such deletion is required in order to prevent “cyberflight”. As a practical matter this will substantially reduce the time, by up to one-third, that registrants/respondents have to prepare an effective defense against complainant allegations – as well as deprive less sophisticated registrants of critical time necessary to gain an understanding of the UDRP process and their rights within it, and to locate and secure competent counsel capable of assisting in a defense. The Report lacks any validated documentation that cyberflight is sufficiently widespread to justify this fundamental degradation of registrant rights.
  • Only if verifiable documentation exists demonstrating that cyberflight is a widespread abuse of sufficient negative impact to justify remedial response, we would alternatively propose that, in order to address cyberflight concerns while minimizing any negative impact on registrant  due process rights and their ability to mount an effective defense, the domain registrar be required to notify the registrant of the UDRP filing at the same time that it confirms to the UDRP provider that the domain has been locked – and that the registrant be provided at that time with a full copy of the filed complaint, to be provided by the UDRP provider to the registrar at the time it transmits the verification request – in conjunction with an increase in UDRP response time to 24 days from the current 20 days, to restore the effective response time reduction that would result from this approach. This will assure that the registrant knows of the UDRP filing as well as its specific allegations no later than two business days after the registrar has received the verification request from the provider. If that approach is deemed impractical for any reason then, as an alternative, we would propose that the time in which a registrant has to respond to formal notification of a UDRP filing by the Provider be increased by 10 days, to 30 days from the current 20.
  • In regard to settlement of a UDRP we prefer adoption of proposed Option B.
  • In regard to additional protections for registrants, we favor adoption of a specific prohibition against unilateral registrar movement of a domain name to a new account that deprives the registrant of control over his domain name registration until such time as the UDRP provider renders final judgment (assuming absence of subsequent appeal to a court of competent jurisdiction) or the case is settled or withdrawn.
  • ICA continues to believe that UDRP reform of at least a procedural nature should be initiated in the near term with a primary focus on establishing a standard enforceable contract between ICANN and all accredited UDRP providers.

 

Discussion

Standardization of Industry Practice and Adoption of a Uniform “Lock” Definition

As noted in the Initial Report (IR), while Neither the UDRP nor the RAA require a “lock” of any sort during a UDRP at least as far as changes within a registrar are concerned…there is the assumption, or implicit consequence, of a “lock” requirement which has developed over time in connection with UDRP Paragraph 7 and 8…In short, the “locking” associated with UDRP proceedings is not something that is literally required by the UDRP as written, but is a practice that has developed around it, but as a result, there is no uniform approach, which has resulted in confusion and misunderstandings.” (pp.11-12) Further, the vast majority (95%) of registrars impose a lock during UDRP proceedings – “Registrars either lock a domain name pursuant to UDRP proceedings upon receipt of a complaint from the complainant (46%) or upon the provider’s request for verification from the UDRP dispute resolution provider (49%).” (p.15) – but their approaches vary in terms of the type of lock imposed (EPP alone, or EPP + registrar lock) as well as when the lock is initiated and the types of actions prohibited following imposition of a lock.

Given the domain locking requirement that is implicit in the current UDRP policy, as well as the lack of uniformity among the large majority of registrars who impose a lock on those domains implicated in a UDRP filing, we agree that it would be generally beneficial to rectify this situation through adoption of a standard policy and procedure.

Further, we have no objection to adoption of the proposed definition of “lock” so long as it contains the additional proposed bracketed language clarifying that a lock shall not impair resolution of a domain, so as to read:  “[T]he term “lock” means preventing any changes of registrar and registrant without impairing the resolution of the domain name.” (p. 28).

The filing of a UDRP is a mere allegation that a domain is infringing the complainant’s trademark rights, and until there is a substantive determination by the UDRP examiner affirming the allegation there is no valid reason for impairing the domain’s resolution – in fact, such non-resolution would constitute exactly the same type of Internet censorship absent adequate due process that was at the heart of protests against the proposed U.S. SOPA and PIPA legislation in 2012. ICANN should be squarely in record as opposing even the implicit grant of such authority to accredited registrars on their own accord; this matter is discussed in greater detail later in this comment letter.

 

Repeal of the Requirement that the Complainant Inform the Registrant of the UDRP

Proposed Recommendation #2 proposes to:

Modify the provision from the UDRP rules that specifies that upon submission of the complaint to the UDRP provider the complainant should also ‘state that a copy of the complaint […] has been sent or transmitted to the respondent’ (section 3, b – xii) and recommend that, as a best practice, complainants need not inform respondents that a complaint has been filed to avoid cyberflight. The UDRP Provider will be responsible for informing the respondent once the proceedings have officially commenced. (Emphasis added)

We strongly object to this recommendation as one that will substanti
ally diminish the ability of a domain registrant to mount an effective defense — and as being premised on the risk of “cyberflight” absent any validated documentation in the IR of the incidence of such registrant abuse.

While we decry registrant cyberflight as an unwarranted abuse by those who seek to avoid UDRP adjudication of their alleged infringement, the transgressions of a few cannot justify depriving the vast majority of honest domain registrants of basic procedural protections. The receipt of timely notice that an adjudication procedure has been initiated against a party is fundamental to the preparation of an effective defense. Modern legal systems require the complainant to serve the respondent with the complaint upon its submission to the judicial forum, notwithstanding the fact that such notice may provide additional time to exit the jurisdiction, shelter assets, or otherwise seek to avoid the consequences of litigation. This precedent of favoring balanced due process over potential misdeeds  should be followed as well in UDRP arbitration practice.

The UDRP is already substantially biased in favor of complainants in numerous ways. The complainant has an unlimited amount of time to prepare a UDRP complaint while the registrant has only twenty days to file a response upon official notification from the UDRP provider. The complainant determines which UDRP provider shall adjudicate the matter and can engage in forum shopping to exploit differences in provider administration that develop in the absence of a standard and enforceable contract between ICANN and all accredited providers. And the complainant determines the timing of the filing and can choose to initiate a case in conjunction with major holidays or vacation periods when the registrant is less likely to be checking email on a regular basis and will face more difficulty in identifying and securing competent counsel to assist in a defense.

Particularly among less sophisticated registrants, the receipt of notice that a UDRP has been initiated that can result in the cancelation or transfer of a domain that may be a long-standing foundation of an online business or forum for free speech can be a highly traumatic event as well as a cause of significant confusion regarding proper reaction. The vast majority of registrants are not familiar with the UDRP process or the means by which they can defend their rights. Once they have gained an understanding of the situation, they are likely to find that, even if they have a family or business lawyer, such individual lacks any familiarity with UDRP procedures or practice – and that they must then seek out expert counsel with such requisite experience and knowledge.

In this real world context, the time period between receipt of the complaint from the complainant and receipt of official notice from the UDRP provider – a period that generally encompasses one to two weeks (7-14 days)– provides the registrant with critically necessary time to understand their situation and to confer with competent counsel. The IR proposes to eliminate this time cushion absent any documentation of the actual incidence of cyberflight.

Just as registrar domain locking has become an implicit requirement and widespread industry practice in the absence of an explicit demand in the UDRP Rules, the transmission of the complaint to the respondent by the complainant – which is explicitly required by current UDRP Rules – has become an expected part of the time period in which registrants/respondents have to prepare a defense. As a practical matter the recommendation will reduce the respondent’s defense period by one to two weeks, a substantial diminution given that the official response period is a scant twenty days.

While we condemn any registrant’s attempt to avoid a legitimate UDRP action through transfer of a domain to a new registrar we cannot support elimination of the complainant’s obligation to serve the registrant absent more far compelling and verified documentation that cyberflight is a problem of such significance as to justify any reduction in the notice time provided to a domain registrant, much less the drastic reduction proposed in the IR.

The effective reduction of the response time will also have other deleterious effects. It will increase the possibility that a domain registrant may seek to sell and transfer the domain absent any awareness that a UDRP has been initiated and a lock has been imposed. It will also reduce the time period in which a settlement might be reached that would reduce the need for formal UDRP adjudication.

 

Alternative Response if Cyberflight can be Documented to Constitute a Substantial Problem

As noted above, the IR fails to contain any verified documentation that cyberflight is a substantial problem affecting a significant portion of UDRP cases. In the absence of such data we must oppose any alteration of the existing requirement that the complainant provide the respondent with a copy of the complaint upon its submission to the UDRP provider.

If such verified documentation of substantial incidence of cyberflight incidence exists,  is publicly disclosed for review, and is found convincing in regard to a large-scale problem, we would propose two alternative means of addressing it that substantially  mitigate the negative effect upon registrant response time that would result from adoption of Preliminary Recommendation #2.

Preliminary Recommendation #3 presently states:

Following receipt of the complaint, the UDRP Provider will, after performing a preliminary deficiency check, send a verification request to the Registrar, including the request to prevent any changes of registrar & registrant for the domain name registration. The registrar is not allowed to notify the registrant of the pending proceeding until such moment that any changes of registrar and registrant have been prevented, but may do so once any changes of registrar and registrant have been prevented. (Emphasis added)

We would propose, solely in the context of the disclosure of compelling cyberflight justification data, that the word “may do so” be changed to “shall do so immediately”, and that this additional language be added to the end of the underlined portion of the recommendation: “and shall also transmit the full text of the UDRP complaint to the registrant, such complaint to be provided to the registrar by the UDRP Provider at the time it sends the verification request”. This modification would address any documented cyberflight problem of a substantial nature while minimizing the reduction in the registrant’s effective time period in which to secure competent counsel and prepare a response.

Adoption of  this alternative would still reduce the registrant’s time for defense preparation by at least the two business day period in which the registrar is required to lock the domain, plus the period that transpires between the time that the UDRP Provider receives the complaint and the time it completes its deficienc
y check and then transmits the verification request to the registrar. We therefore propose that adoption of this approach be accompanied by an increase of the standard UDRP response time by 4 days, from 20 to 24, to offset the reduction and render a neutral result.

If that proposal is deemed impractical for any reason then we would further propose, as a second alternative,  that the standard time period for a registrant to submit his response to the UDRO provider be increased by ten days, from 20 to 30 days, in order to restore the time lost due to non-notification from the complainant.  

This second alternative should have little if any impact upon the timing of final UDRP decisions, as they are generally not rendered for at least several weeks after all materials have been submitted by the two parties to the arbitration.

UDRP Settlements

In regard to settlements of a UDRP, the IR states (at pp.33-34):

In relation to the settlement of a UDRP Proceeding, the Working Group has discussed the following two options to further clarify the steps involved. However, the Working Group has not come to a conclusion yet which of these two options, or a possible alternative, to recommend. As a result, the Working Group is requesting community input on these options…

We prefer Option B as both providing more specific guidance on the procedures relating to a settlement and more specifically addressing the subject of the IR – a domain lock.

Option B reads:

Option B – (1) parties ask for suspension (suspension request includes automatic dismissal when the suspension period is up), (2) provider issues order allowing registrar to unlock for the sole purpose of (whatever the settlement is), (2) parties settle, (3) parties request the registrar to unlock (not to manage anything further, like terms, just unlock to allow transfer), and (4) provider dismisses case automatically with no further action needed (if settlement discussions break down, either party can request that the case be reinstated before automatic dismissal).

 

Additional Registrant Protections – Name Server Control,  Domain Resolution, and Renewals

The IR raises two subjects that relate to fundamental rights of domain registrants.

The first is control of the name server. The IR states (pp.26-27):

           

The Working Group discussed that one of the areas where additional safeguards might be appropriate is in relation to the registrant’s control of the name server. It was noted that there are cases known in which the registrar moves the domain name subject to UDRP Proceedings to a different account, which means the registrant does not have any control anymore over its domain name registration. It was pointed out that changes to the DNS are not considered ‘transfers’ as defined in the UDRP and any changes to the DNS would therefore not need to be prevented. The Working Group suggested that clarifying that changes to the DNS are allowed, may ensure sufficient safeguards as per the charter question. (Emphasis added)

We do not believe there is any justification for the registrar to deprive the registrant of control of its domain name registration/name server based upon receipt of notice that a UDRP action has been commenced against the domain. Once the domain has been locked there is clear assurance that it will be subject to UDRP adjudication. Registrar deprivation of a registrant’s control over its domain registration should be prohibited in such circumstances as an action that is neither countenanced nor justified by a domain lock imposed due to a UDRP.

In addition, Preliminary Recommendation #1now reads:

Preliminary Recommendation #1: In this context, the term “lock” means preventing any changes of registrar and registrant [without impairing the resolution of the domain name]20.

Footnote 20 relating to this recommendation states:

20 The WG is considering adding the bracketed language and would welcome community input on the proposed addition. 

We believe that the final adopted version of Recommendation #1 must contain the bracketed language to make absolutely clear that a registrar’s obligation to lock a domain subject to a UDRP does not provide it with the authority to impair the domain’s resolution. The filing of a UDRP constitutes a mere allegation that the domain is infringing upon the complainant’s trademark rights, and the registrant must be considered to be innocent until the matter is fully adjudicated (including potential judicial appeal of an adverse UDRP decision).

Permitting a registrar to impair a domain’s resolution would shut down all legitimate activities taking place at the domain – including commerce and speech. This is exactly the type of “domain censorship” absent adequate due process that elicited a global outcry against the proposed U.S. SOPA and PIPA legislation in early 2012. ICANN should take all necessary steps to make clear that such action is not justified by the filing of a UDRP.

Again, the UDRP is solely designed to provide a non-judicial arbitration alternative for cases of alleged trademark infringement (cybersquatting), and is not meant to be an alternative to the courts for more serious domain-based abuses such as phishing, pharming, spamming, distribution of malware, and cyberattacks. Non-resolution of a domain may be an appropriate response to such illicit actions but should only take place subject to applicable law under the auspices of a court of competent jurisdiction, along with attendant due process protections.

Finally, some ICA members have reported that a registrar “lock’, whether imposed in response to a UDRP or for other purposes, has impaired ready renewal of a domain approaching expiration. We therefore urge that the Final Report also contain responsive language making clear that domain renewal should not be impaired by a registrar lock.

 

ICANN Educational Materials

Preliminary recommendation #11 states:

ICANN, in collaboration with UDRP Providers, Registrars and other interested parties, will develop educational and informational materials that will assist in informing affected parties of these new requirements and recommended best practices following the adoption by the ICANN Board of t
hese recommendations.

ICA agrees that such materials would be beneficial and believes that, in addition to input from all interested parties, that such materials should be subject to public comment prior to final adoption.

 

The Need for Comprehensive UDRP Reform

As noted in the IR (p.3):     

The GNSO Council considered the Final Issue Report on the Current State of the UDRP and decided at its meeting on 15 December 2011 to initiate ‘a PDP and the establishment of a Working Group on recommendation #7 of the Inter-Registrar Transfer Policy Part B Working Group concerning the requirement to lock a domain name subject to UDRP proceedings’. The charter for the PDP Working Group was adopted by the GNSO Council on 14 March 2012 and the Working Group convened on 16 April 2012.

While we have no serious objection to adoption of a standard definition of a domain “lock” and the standardization of registrar procedures in the context of a UDRP filing, we remain chagrinned that the GNSO Council, at that same December 2011 meeting, resolved that the initiation of UDRP reform should not even be considered until eighteen months after the introduction of the first new gTLD.

With such introduction now deferred to at least the second half of 2013, that means that the earliest that UDRP reform could start to be considered would be sometime in the first half of 2015. Given the complexity and potential controversy of that subject, we would not expect even an Initial Report to be issued for at least 12-18 months following initiation – with the bottom line being that any resulting UDRP reform would not be initiated until at least 2017, and more likely 2018.

This is simply unacceptable, especially as the UDRP is the only ICANN consensus policy  that has never been reviewed since initial adoption. At a minimum, procedural UDRP reform focused upon development of a standard and enforceable contract between ICANN and all UDRP providers is required to prevent complainant forum shopping and assure that the administration of the UDRP remains uniform as ICANN accredits additional providers in response to new gTLDs, including International Domain Names (IDNs). ICA recently restated its opposition to the accreditation of any new providers, such as the Arab Center for Dispute Resolution (ACDR), until such a standard contract is developed and adopted.

The IR makes clear that its proposed changes fall into the policy area, rather than that of implementation of existing policy:    

The Working Group also discussed the current requirement under the UDRP rules for the complainant to inform the respondent upon filing of the complaint (the complaint has to ‘state that a copy of the complaint, including any annexes, together with the cover sheet as prescribed by the Provider’s Supplemental Rules, has been sent or transmitted to the Respondent’ – UDRP Rules15 section 3, art b (xii)). The WG observed that informing the respondent prior to the locking of a domain name could result in cyberflight as the domain name registration may not have been locked by the registrar. It was also noted that under the Uniform Rapid Suspension System (URS) the respondent is only notified after the domain name registration has been locked by the registry (‘Within 24 hours after receiving Notice of Lock from the registry operator, the URS Provider shall notify the Registrant of the Complaint’16). As a result, the WG is recommending a targeted change to the UDRP rules to modify this requirement and instead make it optional for the complainant to inform the respondent at the time of filing the complaint with the UDRP Provider. (Emphasis added)

ICA continues to believe that additional targeted changes to UDRP rules are required to assuage registrant concerns regarding the certainty and impartiality of UDRP adjudication, as well as to prevent forum shopping as the ranks of UDRP providers increase. While we realize that the general topic of UDRP reform is beyond the scope of the IR and the Working group’s mandate, we nonetheless feel it is necessary to restate our position when addressing this UDRP-related matter.

 

 

Conclusion

ICA has no objection to the adoption of a standard definition of domain “lock” in the UDRP context so long as it makes clear that a registrar is not authorized to block a domain’s resolution in conjunction with a UDRP-initiated domain locking action, and does not negatively impact domain resolution or renewal.

However, we strongly oppose elimination of the current requirement that the complainant serve the registrant with a copy of the UDRP complaint at the same time it files it with the UDRP provider, as this would deprive the registrant of critical time to prepare an adequate UDRP defense. The incidence of alleged “cyberflight” lacks any adequate documentation in the IR to justify such a detrimental action against a fundamental registrant procedural right. If such verifiable data exists it should be shared with the community and, if cyberflight is widespread enough to justify some remedial response, it should take a form that eliminates any potential negative impact upon a registrant’s ability to mount an effective defense.

We hope that ICANN finds our views useful Thank you for considering them in this important matter affecting the basic rights of domain registrants.

 

Sincerely,

 

 

Philip S. Corwin

Counsel, Internet Commerce Association

 

 

 

 

 

 

10
Apr

ICANN to GAC: Agreement in Principle Reached on New RAA

On the afternoon of Tuesday, April 9th, during ICANN’s 46th Public Meeting currently taking place in Beijing, China, ICANN CEO Fadi Chehade announced that, following 20 months of negotiations, “agreement in principle” had been reached on a new version of the Registrar Accreditation Agreement (RAA) to be put into effect immediately for all new and incumbent registrars that wish to sell domain registrations in new gTLDs – and that will eventually be put in place with all other registrars as their current agreements expire. The announcement came during a meeting between ICANN’s Board and its Governmental Advisory Committee (GAC).


According to Chehade, the final agreement gives particular attention to concerns expressed by law enforcement officials, with all of their dozen recommendations being addressed — and the final agreement came to fruition after he personally intervened in negotiations 2.5 months ago.


Major provisions of the final agreement include:



  • ·         Registrant WHOIS data verification

  • ·         An identified abuse point of contact at each registrar

  • ·         Data retention obligations

  • ·         Enhanced ICANN compliance powers

  • ·         Prohibition against a registrar’s direct engagement in cybersquatting

  • ·         Obligations vis-à-vis a registrar’s resellers, including disclosure of their names

  • ·         Linkage to a standard plain language informational document on Registrants’ Rights and Responsibilities

  • ·         A “clear path” for subsequent negotiation and amendment of the RAA

  • ·         Establishment of a unilateral right for ICANN’s Board to amend the RAA for “compelling and significant reasons”

The final language of the RAA has not yet been publicly disclosed and will be subject to public comment before adoption. The Board’s quest for a unilateral right to amend has been particularly controversial, and a similar provision is being sought by ICANN for the New gTLD Registry Agreement (RA), with good faith negotiations still ongoing.


During subsequent discussion, the European Commission (EC) representative on the GAC sought and received confirmation that where the RAA conflicted with applicable law regarding such matters as data privacy and security, that the statute law and regulations would preempt the RAA for registrars subject to  its jurisdiction. It remains to be seen whether this will provide a marketplace advantage to certain registrars among registrants seeking such enhanced protections.


The draft plain language statement of registrants’ rights and responsibilities can be found at http://www.icann.org/en/resources/registrars/raa/proposed-registrant-rights-responsibilities-07mar13-en.pdf . It is still being considered by registrars. While the information it provides is probably well known to domainers, it may be of significant informational value to casual and infrequent domain registrants.


           


 

27
Mar

ICA Comments on ACDR’s Revised Application to Provide UDRP Services

Several weeks ago, ICA intervened with ICANN’s Board to request that the revised application of the Arab Center for Dispute Resolution (ACDR) be withdrawn from its Consent Agenda and put out for public comment. (see http://internetcommerce.org/ACDR_UDRP). The Board complied, which we appreciate, in light of the fact that the application had lain dormant for two and a half years. (see http://internetcommerce.org/ACDR-UDRP_Board_Deferral)

Last Friday ICA filed its comment on the revised ACDR proposal. While the revised application has some modest improvements compared to the 2010 version, there are still many unanswered questions – particularly how ACDR will assure that proposed panelists with no UDRP experience will receive adequate training, what steps will be taken to assure that the full panelists roster will be utilized on an unbiased basis, and how ACDR will assure that its UDRP adjudications are consistent with prevailing practice and don’t develop in a manner that encourages forum shopping by complainants.

However, regardless of the merits of this particular application, ICA will continue to oppose the accreditation of the ACDR or any other potential UDRP provider until ICANN adopts an enforceable mechanism to assure uniform disposition of UDRP cases regardless of which arbitration provider is selected for their resolution. It is simply inexcusable that ICANN accredits UDRP providers — and thereby provides them with the power to extinguish or transfer domains — when there is no standard contract that sets enforceable standards. Given the value of many domains and the basic rights that any registrant is entitled to, we intend to keep pushing for ICANN to do the right and responsible thing.

While the initial ACDR comment period closed on March 22nd, the reply period is open until April 13th – anyone who wishes to file a comment can still do so by going to http://www.icann.org/en/news/public-comment/acdr-proposal-01mar13-en.htm.

The text of ICA’s comment letter follows–

 

VIRTUALAW LLC

Philip S. Corwin, Founding Principal
1155 F Street, NW  Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
psc@vlaw-dc.com

 

                                                                                                March 22, 2013

 

By E-Mail

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Revised Proposal of the ACDR to Serve as a UDRP Dispute Resolution Service Provider

Dear ICANN:

I am writing on behalf of the members of the Internet Commerce Association (ICA). ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.

These comments reflect our views on the  “Revised Proposal of the ACDR to Serve as a UDRP Dispute Resolution Service Provider” that was posted for public comment on March 1. 2013 at http://www.icann.org/en/news/public-comment/acdr-proposal-01mar13-en.htm.

 

Executive Summary

The major points made in this comment letter are:

  • ·         ICA continues to oppose the accreditation of the ACDR or any other potential UDRP provider until ICANN adopts an enforceable mechanism to assure uniform disposition of UDRP cases regardless of which arbitration provider is selected for their resolution.
  • ·         In the absence of such a mechanism the potential for forum shopping at the expense of registrant rights remains a major concern for ICA members.
  • ·         ACDR’s application continues to raise questions about the qualifications and preparatory training of many of its proposed panelists, as well as its overall commitment to administering UDRP cases in a fashion that is consistent with established practices.

 

Discussion

Prior Background

The ICA previously commented on ACDR’s request to become an accredited Uniform Dispute Resolution Policy (UDRP) provider when it was first put out for public comment in September 2010. Our full statement can be found at  http://forum.icann.org/lists/acdr-proposal/msg00005.html; we ask that it be incorporated in conjunction with this comments because most of the points raised at that time remain highly relevant.

The Executive Summary of that comment letter made the following points:

  • ·          ICA strongly opposes the accreditation of the ACDR or any other new UDRP arbitration provider until ICANN establishes a standard contract or other uniform and enforceable agreement with all providers of UDRP services.
  • ·         Such a standard agreement is the only means of assuring all business entities that have made substantial investments in acquiring and developing domains of procedural and substantive due process when a UDRP action is initiated by or against them.
  • ·         A standard agreement is also the only means by which to prevent forum shopping, by which newly accredited providers seek to influence complainants’ arbitrator choice by further tilting the system against registrants.  We have already witnessed the CAC attempt this through their proposal to offer an unacceptably condensed version of the UDRP through amendment of their Supplement Rules. ACDR’s request that they be allowed to process up to 5,000 cases during their initial start-up period – an astronomical projection that is higher than the total combined number of annual case arbitrations administered by the two leading UDRP providers – can only raise questions about how they intend to attract many thousands of filings.
  • ·         Regardless of whether ICANN establishes and enters into such standard UDRP provider agreement, the ACDR’s Proposal contains numerous material deficiencies that require its rejection by ICANN.

Two and one half years later, ICANN has taken no actions to address the concerns raised in the first two bullet points. There continues to be no “standard contract or other uniform and enforceable agreement with all providers of UDRP services” or even the initiation of a process leading to one – notwithstanding the fact that the approaching advent of more than a thousand new gTLDs, including International Domain Names IDNs) in Non-Latin scripts, as well as ICANN’s own ongoing outreach to the developing world and diversification of its own operational locations, would indicate that there will inevitably be applications from new entities seeking to be UDRP providers based in regions other than Europe and the United States, where the two dominant providers (WIPO and NAF) are now located. It astounds us that ICANN, after devoting so much time and effort to protection of trademark rights at new gTLDs, has failed to undertake similar steps relating to its own UDRP notwithstanding divergent approaches to enforcement of IP and domain rights in various national jurisdictions and geographic regions.

More disturbingly, in addition to taking no steps to better ensure uniformity of UDRP administration, ICANN recently announced that NAF would be the sole provider of Uniform Rapid Suspension (URS) complaints for the foreseeable future, notwithstanding NAF’s shoddy record of allocating nearly half its UDRP caseload to less than five percent of its listed panelists (http://dnattorney.com/NAFdomainnamedisputestudy2012.shtml); as well as ICANN’s receipt of applications to provide URS arbitration from new providers with estimable credentials and innovative approaches.

Further, despite the unanimous recommendation of the STI-RT that ICANN should discourage forum shopping among URS service providers through its URS implementation and contracts”.   (emphasis added – http://gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf), for now it appears that NAF and ICANN are bound solely by a 2-page Memorandum of Understanding (MOU) that fails to explicitly address any of the questions raised by NAF’s appointment, and which has no enforcement mechanism. (http://www.icann.org/en/about/agreements/partnership-mous/naf-mou-20feb13-en.pdf). ICANN apparently intends to extend the unjustified practice of accrediting UDRP providers absent contractual compliance mechanisms to the new field of the URS, in contradiction of the community’s unanimous policy recommendation.

In short, while domain registrants remain the primary source of ICANN funding, they are getting con
tinued short shrift from ICANN when it refuses to recognize and address the need for an enforceable means to ensure uniform and effective UDRP (and now URS) administration.

Turning back to the original 2010 ACDR application, the majority of comments received on the ACDR application either opposed it or requested substantial revisions and clarifications. ICA’s comment letter opposed any new accreditations of UDRP providers and also cited material deficiencies in the ACDR application (http://forum.icann.org/lists/acdr-proposal/msg00005.html). The Summary of the statement filed by the Business Constituency stated “The Business Constituency (BC) cannot support approval of this or any other UDRP accreditation application at this time on the grounds that no new UDRP providers should be accredited until ICANN implements a standard mechanism for establishing uniform rules and procedures and flexible means of delineating and enforcing arbitration provider responsibilities.” (http://forum.icann.org/lists/acdr-proposal/msg00004.html). And the comment of the IP Constituency (IPC) noted that “any enthusiasm for the ACDR’s proposal must be tempered by the desire to ensure a predictable and equitable system of domain name dispute resolution – as opposed to any profit-driven “race to the bottom” between UDRP providers”, and listed numerous revisions and suggestions that it wished to see made to the ACDR proposal. (http://forum.icann.org/lists/acdr-proposal/msg00006.html)

The ICANN staff Summary and Analysis of the comments received stated:

The commenters were of varied opinions on the ACDR’s proposal: Three commenters (George Kirikos, the BC and the ICA) were expressly against the ACDR proposal. The IPC noted its conditional approval subject to incorporation of suggested changes, and only one commenter (Alramahi) submitted unqualified support for the ACDR proposal.

It also noted:

Some areas identified by the IPC and ICA include:

(i) Provision of more detail on track record in handling alternative dispute resolution proceedings;

(ii) A more precise statement regarding the case load administrative capacity that the ACDR anticipates handling;

(iii) Better documentation regarding the creation of training materials;

(iv) Revision of specific terms in the supplemental rules to better align with the UDRP process;

(v) Revision to the ACDR’s fee structure; and

(vi) Release of confidential internal operating procedures.

ICANN is providing the ACDR with a copy of this summary and analysis so that the ACDR may determine how to respond and whether it wishes to revise any portion of its proposal. When a revised proposal is received, the proposal will be reviewed to determine if further public comment is advisable prior to presentation to the Board for consideration. Further comment may not be necessary, for example, if the ACDR elects to not alter its fee schedule, as the UDRP allows providers to set their own fees.

Separate from the ACDR proposal, ICANN has been undertaking a process to review its relationships with UDRP providers, and that review is ongoing. (Emphasis added)

We note that while the 2010 staff Summary and Analysis refers to an ongoing review process to review ICANN’s relationships with UDRP providers, we know of no information being provided to the community in regard to the status or results of such a review. If such a review has indeed been undertaken the community should be informed of its status and all relevant information pertaining to it. If such a review process has been halted or remains incomplete then we suggest it be accorded a high priority for near-term completion.

As described above, nearly two and a half years have passed since the ACDR proposal was put out for public comment. The majority of comments opposed approval or requested substantial revision and additional information. We were therefore very surprised when the revised ACDR proposal suddenly appeared on the Board’s Consent Agenda for its Special Meeting of February 28, 2013  with no information presented to the ICANN community as to whether any modifications have been made to the original ACDR proposal, and whether any additional clarifying information has been submitted.

In response to that listing, ICA dispatched a letter to CEO Chehade and Board Chairman Crocker on February 26, 2013 in which we requested that the Board:

  • ·         Defer action on this matter until at least its next scheduled meeting.
  • ·         Publish the pending ACDR proposal for community review and comment.

We are aware that similar requests were received from both the BC and IPC. We appreciate the fact that the Board responded to those communications by deferring action on the ACDR application and by having staff put it out for the public comment we are now engaging in.

The Revised Application

Given the fact that ICANN has failed to even initiate a process for developing a standard enforceable mechanism for ensuring uniform UDRP a
dministration among disparate providers, ICA must continue to oppose approval of the ACDR application – or that of any other entity seeking UDRP accreditation.

The principal concern of ICA members, due to the fact that it is complainants who determine both the timing of UDRP filings and the provider with which they file, is that the lack of such a mechanism will inevitably encourage forum shopping as proliferating ranks of UDRP providers seek to gain market share. The means by which such forum shopping can be encouraged – price reductions and concomitant dilution of high quality legal analysis, supplemental rules that unduly favor complainants, and development of a reputation as a complainant-biased forum – would all come at the expense of registrants’ procedural and substantive rights. While the UDRP does permit appeal to courts of relevant jurisdiction that is an expensive fallback as well as one that varies in effectiveness depending on the presence and substance of statute law in different national jurisdictions.

Beyond that basic cause for opposition, the revised ACDR application also contains statements and deficiencies that argue for its rejection.

“Vision”

The ACDR’s revised application of March 1, 2013,  in the application section “Our Vision”, states:

While we put impartiality and professionalism first, we also take into account the necessity for gradual invergance [sic] of the rules applied by UDRP providers. Hence, we acknowledge the importance of constant interaction among the existing providers in order to stay aware of the conflicting policies and to interactively discuss them.(Emphasis added)

While we commend the ACDR for recognizing the necessity of uniformity of the rules applied by UDRP providers and its commitment to “constant interaction” in pursuit of that goal, no UDRP provider has any authority to require another to apply the rules in a consistent manner; rather, it is ICANN that accredits all UDRP providers and therefore ICANN’s responsibility to establish the enforceable mechanism that can best achieve that goal.

Further, elements of this statement are deeply concerning. The UDRP is supposed to be “Uniform” in application regardless of which arbitration forum a complaint is filed in. Yet the statement’s reference to the “necessity for gradual invergance [sic] of the rules applied by UDRP providers” appears to presume that such divergence now exists, is evidenced by  “conflicting policies”, and is acceptable — with uniformity just a distant goal to be reached in gradual steps. We absolutely reject that viewpoint.

Listed Neutrals

The application’s Initial List of Neutrals also raises concerns:

In line with the vision of ACDR, panelists will be invited from different nationalities and with different approaches to IP and other related fields. The selection of the panelists will be according to their experience and knowledge. (emphasis added)

The reference to “different approaches to IP” seems at sharp odds with the overarching need for uniform approaches in UDRP jurisprudence. Also, while many of the initial panelists listed in Annex 1 have impressive credentials, fifteen of the thirty-three listed neutrals have no prior experience in UDRP administration. This raises the issue of how such panelists will be made familiar with existing UDRP practice prior to initiating their own participation in the process, and the application provides no indication of what steps or requirements will be undertaken, or training materials and instruction provided, to assure that these novice panelists receive extensive education in contemporary UDRP practice to assure consistency with prior case law.

There is also no indication of what methods will be utilized to assure that the entire list of panelists is assigned cases on a random and dispersed basis. Indeed, citing the NAF precedent, there is nothing to prevent ACDR from assigning the bulk of its cases to just a few panelists, all of them being those who lack any prior UDRP experience. 

Self-Referential Perspective

Several statements in the application give rise to concerns that the ACDR will be focused primarily on its own UDRP practice absent sufficient reference to more authoritative sources such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (http://www.wipo.int/amc/en/domains/search/overview2.0/index.html). Again, this raises the prospect of divergent practices that encourage forum shopping.

For example, in the application’s section on Online Discussion, it states:

The ACDR will establish an online discussion medium, accessible by panelists only, enabling them to communicate with each other and exchange perspectives and experience on all matters relating to the Center’s UDRP process and legal practice of domain dispute resolution.

Any significant legal perspectives or points of critical practice importance which would have the effect of further development in the field will be published on the Center’s website in the form of panelists’ views on UDRP practice.(Emphasis added)

And then, in the section titled Publishing the Decision of the Panelists in the Proceedings, it further states:

ACDR will have its own system/search tool for researching the Center’s decisions resolved under UDRP. The tool will assist complainants, respondents, their counsel, panelists, providers and members of the public who are concerned with the DNS, the UDRP practice, as well as IP protection in general, in researching decisions
on domain names. (Emphasis added)

These statements raise concern that, due to the focus on the “Center’s UDRP process and legal practice”, and through development of a search tool focused only on the “Center’s decisions”,  there may arise an ACDR arbitration practice that over time begins to differ in significant ways from that of other UDRP providers.

Instead, ICANN needs to foster the development of tools that provide comprehensive information about UDRP practice among all accredited providers, and that fosters a uniform approach to its application and consistent outcomes in every region of the world.

Caseload projections

The ACDR’s original proposal in 2010 requested that it be allowed to process up to 5,000 cases annually during its initial startup period – a staggering number for an untested provider, about equal to the number of combined annual cases heard by both WIPO and NAF.

The revised proposal has considerable downsized its ambitions, stating: “During the start-up period, the ACDR will be ready to start with a limitation not exceeding 50 per month.” That would still total 600 decisions per year, or more than one-tenth of total UDRP cases at present levels. And, following the start-up period, the ACDR might even decide a greater annual percentage of cases, especially if it adopts an approach to cases and procedural and pricing differences that encourage complainants to favor it.

In sum, the ACDR will, if accredited, likely start out as a significant provider of UDRP dispute resolution and will have the capability to rapidly grow its caseload. These facts again speak to the pressing need for a mechanism to ensure a uniform approach to case administration.

Conclusion

Notwithstanding our comments, the ICA is not fundamentally opposed to the accreditation of additional UDRP providers, and we recognize that ICANN will probably receive additional applications in coming years. This makes it all the more incumbent for ICANN to initiate an approach to establish a standard enforceable mechanism to assure uniform application of the UDRP no matter which arbitration forum is involved. While elements of the ACDR application that cause us concern might well be addressed through explanation or modification, only ICANN has the power to address ICA’s fundamental concern. It is very unfortunate that, more than two and a half years after submission of its original application, we must still oppose ACDR’s revised application due to ICANN’s fundamental neglect of this matter.

We hope that ICANN finds our views useful Thank you for considering them in this important matter affecting the basic rights of domain registrants.

 

Sincerely,

 

 

Philip S. Corwin

Counsel, Internet Commerce Association

 

 

22
Mar

ICANN Amnesia – Expansion of Trademark Clearinghouse Data Contradicts Very Recent Statements

ICANN’s institutional memory seems to be slipping, and that concerns us.

On March 20th, ICANN announced that trademark owners would not only be able to register their marks meeting certain validation criteria in the Trademark Clearinghouse (TMC) but also up to fifty variations of each mark that had been found to be the subject of abusive registrations in a UDRP arbitration or court decision (see http://newgtlds.icann.org/en/about/trademark-clearinghouse/strawman-solution-memo-20mar13-en.pdf). This will change the nature of the TMC from a repository of high-quality trademarks to something quite different.

Regardless of how one feels about the substance of the decision (and ICA was on record as against this expansion – see http://internetcommerce.org/Strawman_Non-Solution) the procedure by which it was reached flies in the face of ICANN’s own statements as to whether it had the authority to implement such an expansion and how it would deal with new gTLD issues identified as policy matters by the GNSO Council.

On September 19, 2012 – just six months prior to the “Strawman Solution” decision reached this week — ICANN CEO Fade Chehade dispatched a letter that informed senior members of the US Congress that this very expansion of the TMC database would put ICANN in the position of creating IP rights rather than protecting them:

“It is important to note that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determination as to the scope of particular rights. The principle that rights protections ‘should protect the existing rights of trademark owners, but neither expand those rights nor create additional rights by trademark law’ was key to work of the Implementation Recommendation Team…” (Emphasis added)

Likewise, ICANN’s own Summary of the Strawman Solution, issued on November 30, 2012 when it solicited public comment on all the proposals it encompassed, contained this highly relevant statement:

The inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter. This proposal provides a path for associating a limited number of additional domain names with a trademark record, on the basis of a decision rendered under the UDRP or a court proceeding. Given the previous intensive discussions on the scope of protections associated with a Clearinghouse record, involving the IRT/STI, we believe this needs guidance from the GNSO Council.” (Emphasis added)

Well, what guidance did ICANN receive from the GNSO Council? On   February 29, 2013 its Chair dispatched a letter to CEO Chehade providing the policy guidance that he had requested of it (see http://gnso.icann.org/bitcache/d8eaf7ce8d121b69d340d1d14223520fd7d478b3?vid=46277&disposition=attachment&op=download). And this is what the GNSO Council’s letter stated in regard to the proposed expansion of the TMC database:

            On addition of names to TMCH previously subject to UDRP or legal proceeding

The majority of the Council believes this suggestion deserves further examination, not only to protect the interests of rights holders, but also to ensure latitude for free speech through lawful and non-abusive registrations.  Councillors respectfully observe that the existence of a domain name in the root system is not necessarily evidence of abuse, and that a subsequent registrant may have legitimate and non-infringing use in mind for a domain name corresponding exactly to a term that was the subject of previous action. 

Accordingly, the majority of the council finds that this proposal is best addressed as a policy matter, where the interests of all stakeholders can be considered.  (Emphasis added)

Back on January 31st of this year, when ICANN solicited feedback on the Staff Paper “Policy vs. Implementation – Draft Framework for Discussion”, what did that framework say in regard to matters identified as falling into the policy category? It proposed that when policy guidance was sought from a relevant supporting organization, like the GNSO, and when that guidance identified an issue as constituting policy, it should be subsequently addressed through a Policy Development Process (PDP) or a Policy Guidance Working Group (PGWG). But of course neither step was taken following receipt of the GNSO’s letter just three weeks ago. Instead, ICANN made a unilateral decision to ignore the GNSO’s recommendation and adopt the proposal absent any further policy development.

Instead, here is how the March 20th announcement describes the decision to expand the TMC database:

            Trademark Claims Protection for Previously Abused Names

The fourth element of the Strawman model was a proposal that where there are domain labels that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding), a limited number (up to 50) of these could be added to a Clearinghouse record. These names would be mapped to an existing record where the trademark has already been verified by the Clearinghouse.

This element of the proposal was referred to the GNSO specifically, as the scope of protection derived from inclusion in the Trademark Clearinghouse was discussed previously. The GNSO advised that this should be a policy discussion rather than an implementation change. The GNSO Council communication also made reference to the stated principle that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or a creator of new rights.

Having reviewed and balanced all feedback, this propos
al appears to be a reasonable add-on to an existing service, rather than a proposed new service.
Given that domain names would only be accepted for association with an existing Clearinghouse record, and only on the basis of a determination made under the UDRP or national laws, the proposal would not require any adjudication by the Clearinghouse. Additionally, the provision of notifications concerning associated domain names would not provide sunrise or other priority registrations, nor have a blocking effect on registration of these names by any party.

It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.

Based on this analysis, ICANN intends to proceed with implementing this aspect of the proposal.

 

As one can see, there is no reference to ICANN’s own recent earlier statements that this expansion would indeed create new rights and that it was a policy matter rather than an “add-on” to an “existing service”. There is also no explanation of why ICANN brushed aside the GNSO’s feedback that this was a policy matter that required further input from all stakeholders and substituted its own analysis for that of the community represented by the Council. And there is also no explanation of who made this decision, although clearly it was the work of senior staff and officers. As for the statement — “It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse.” — if that’s the decision-making criteria, why stop at 50 additional typos, why not permit inclusion of hundreds or thousands of typos (as no doubt trademark interests will soon advocate) and turn the TMC into a system that issues a torrent of warnings to new gTLD registrants who may lack the slightest scintilla of infringing intent, much less actual post-registration infringing use?

Our response would be that it is difficult to justify adoption of a mechanism that flies in the face of ICANN’s own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speech.

On the same day that the announcement on adoption of the Strawman Solution was made, ICANN released a video in which CEO Chehade stated in regard to the TMC expansion that “we came to the conclusion that it’s an implementation expansion”(see http://blog.icann.org/2013/03/new-gtld-milestones-and-deadlines/). Now we are wondering which “we’ he was referring to. It certainly was not the “we” embodied in the GNSO Council, and it’s certainly not the “we” comprised of the all the stakeholders who would have had a chance to have their interests and views considered if the GNSO’s recommendation had been followed. It’s all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.

It’s also worthwhile to debate the difference between policy and implementation, but that doesn’t mean much when settled policies are suddenly categorized as ‘services” and major alterations as mere “add-ons”. And there’s little point in the community relying on ICANN statements that appear to have a shorter shelf life than many grocery items.

We all understand that policy needs to evolve over time, but public declarations made just six months ago can’t be overridden as if they never existed. Not if ICANN’s own credibility is to be preserved, and not if stakeholders are to continue to engage in a multi-stakeholder process. Many may decide it’s not worth the effort after ICANN actions indicate that community input can be ignored and that its own positions and procedures can be cast aside without warning or adequate explanation.

 

4
Mar

ICANN Board Follows ICA Suggestion, Defers Action on ACDR’s UDRP Proposal

Domain registrants won’t be receiving UDRP notices from Amman, Jordan for at least a while. Last week ICA sent a letter to ICANN’s Board asking that it defer action on the pending proposal of the Arab Center for Dispute Resolution (ACDR) to be accredited as a UDRP arbitration provider and put its revised proposal out for public comment. On Thursday, February 28th the Board held a telephonic meeting – and did what ICA had requested.

We have been advised by one Board member that ICA’s letter “sparked quite a bit of discussion” during last Thursday’s meeting.  The announcement of the Board decision can be found at http://www.icann.org/en/news/announcements/announcement-2-01mar13-en.htm. The Purpose of the notice is described as follows:

ICANN is opening a public comment forum to receive comment on the Arab Center for Domain Name Dispute Resolution’s revised proposal to serve as one of the official dispute resolution service providers for the Uniform Domain Name Dispute Resolution Policy (UDRP).

The ACDR is jointly established by the Arab Intellectual Property Mediation and Arbitration Society (AIPMAS) and the Arab Society for Intellectual Property (ASIP), with headquarters in Amman, Jordan and additional offices in other Arab Countries. Both the AIPMAS (established in 1987) and ASIP promote the activities of the Arab Center of Mediation and Arbitration, established in 2003, active in resolving conflicts related to intellectual property through international arbitrators. If approved, the ACDR would be the first Approved UDRP Dispute Resolution Service Provider headquartered in an Arab state.

The ACDR’s earlier proposal was previously posted for comment. ICANN now seeks input on the revisions, to assist ICANN in determining if this proposal is ripe for Board approval.

We certainly appreciate the Board’s attention to ICA’s request, and its subsequent  decision –as we do the input on this matter that was conveyed to the Board last week by the Business and Intellectual Property Constituencies. Although we do have to question how a matter that has now been put out for public comment to determine if it is “ripe for Board approval” was ever placed on the Board’s Consent Agenda in the first place?

ICA recognizes that a number of factors – including the coming introduction of IDN gTLDs, the spreading globalization of Internet use, and ICANN’s recent decision to establish major offices in Singapore and Istanbul as it reshapes itself as less of a US-centric organization – will likely result in more applications from organizations in the developing world to provide UDRP services. However, we continue to believe that ICANN must establish a standard, enforceable agreement with all UDRP providers to assure that UDRP administration is truly “uniform” no matter which provider is involved. Otherwise, there will likely be an inevitable divergence in arbitration practice that encourages complainant forum shopping at the expense of registrant rights.

In addition to reiterating that overarching objective, ICA will carefully review the ACDR’s Revised Proposal and Relevant Annexures that have now been posted by ICANN to see if substantial improvements have been made since the original September 2010 proposal. The initial comment period opened on March 1st and closes on March 22nd.

28
Feb

IPC Weighs In Against ACDR’s UDRP Proposal

Yesterday we posted a February 26th letter that ICA sent to ICANN urgently requesting that the ICANN Board defer action at its February 28th meeting on the pending proposal of the Arab Center for Dispute Resolution (ACDR) to be accredited as a UDRP arbitration provider — and that ICANN published ACDR’s revised proposal for public comment before taking any final action.

We have just learned that on February 27th ICANN’s Intellectual Property Constituency (IPC) made the exact same request of ICANN. Their message is below.

Now that ICANN has received concerned input from ICA, the IPC, and ICANN’s Business Constituency, we certainly hope they will do the right thing and acquiesce to the requests for deferral and publication. There are two very important things at stake here. The first is whether there will be reliable means to assure that the UDRP will be administered in a uniform manner as new UDRP providers seek accreditation in the future, or whether we’ll witness a race to the bottom that encourages forum shopping. The second is whether ICANN will observe its own commitments to transparency and accountability when it considers such important matters.

Here’s the IPC communication —

            Dear Dr. Crocker and Mr. Chehadé,

I write in my capacity as President of the Intellectual Property Constituency (IPC) to request that the ICANN Board of Directors (i) defer consideration of the Arab Center for Domain Name Dispute Resolution’s proposal to become a UDRP provider and (ii) publish for public comment the most current ACDR proposal.

Attached for your convenience are the comments the IPC submitted in October 2010 on the then-current ACDR proposal.  In its comments, the IPC identified several issues with ACDR’s proposal that required resolution before ICANN approved ACDR’s proposal.  Given those issues and in light of the fact that no information has been shared with the community regarding changes, if any, to ACDR’s proposal since the public comment period closed almost 2 1/2 years ago, IPC believes that it is appropriate and desirable that the current ACDR proposal be made available for public comment before the ICANN Board of Directors acts upon it.

Thank you for your consideration of this request.  Please do not hesitate to contact me if you have any questions about this request or if I can provide further information.

 

Sincerely yours,

Kristina Rosette

President, Intellectual Property Constituency

 

 

 

28
Feb

ICA Asks ICANN Board to Defer Action on New UDRP Provider

Back in September 2010 ICANN invited public comment on the proposal of the Arab Center for Dispute Resolution (ACDR) of Amman, Jordan to become a UDRP arbitration provider. Most of the comments opposed approval or requested changes and clarifications. Nothing more was heard of the application – until it showed up on the Consent Agenda for the ICANN Board meeting scheduled for February 28th!


ICA, which opposed the original application on policy and substantive grounds, thought that  handling the ACDR proposal this way violated ICANN’s oft-stated commitment to transparency and accountability. So we quickly dispatched a letter to ICANN’s Board Chairman and President/CEO requesting that the Board:


•           Defer action on this matter until at least its next scheduled meeting.


•           Publish the pending ACDR proposal for community review and comment.


We think those are pretty reasonable requests and hope the Board agrees. UDRP providers have the power to transfer or cancel domains, and their accreditation should meet very high standards.


ICA also believes that the likely requests of entities around the globe to become UDRP providers over the next few years, in the context of the growing globalization of Internet use and the coming introduction of IDN gTLDs, makes it even more urgent that ICANN establish a standard enforceable agreement with all UDRP providers. After all, the UDRP won’t be “uniform” if it is administered in different ways by multiple providers. That could also set off a race to the bottom if new providers seek to encourage forum shopping by the complainants who decide where to file UDRPs.


As a member of ICANN’s Business Constituency (BC), ICA also requested that the BC retransmit its own 2010 comment letter opposing the accreditation of the ACDR or any other new UDRP providersuntil ICANN implements a standard mechanism for establishing uniform rules and procedures and flexible means of delineating and enforcing arbitration provider responsibilities.” We’re happy to report that the BC has just taken that action in a timely fashion so that the Board is informed of its view prior to its meeting. The cover note accompanying the BC’s 2010 comment states:


            Dear Chairman Crocker and President/CEO Chehade


Comment from BC on recognizing new UDRP providers


It has come to our attention that the Board Consent agenda includes consideration of a proposal for a new UDRP provider.


This was a surprise to many,  as there had been no intervening communications with the broader community since 2010.  There is therefore a lack of information regarding the proposal and how earlier concerns have been addressed by ICANN.


I am retransmitting the position of the BC regarding recognizing new UDRP providers, which was developed and posted in October 2010, in response to an ICANN proposal to recognize new domain name dispute providers.


As described in the Statement, the BC believes that ICANN should implement a standard mechanism for establishing uniform rules and procedures and flexible means of delineating and enforcing arbitration provider responsibilities.


Transmitted by the BC Chair, on behalf of the Business Constituency


February 27, 2013


ICA will continue to press for development of effective means to ensure that the UDRP is administered in a uniform manner by all accredited arbitration providers. The parties to UDRP proceedings – especially domain registrants – deserve no less.


The ICA letter follows:


 


VIRTUALAW LLC

Philip S. Corwin,
Founding Principal
1155 F Street, NW  Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
psc@vlaw-dc.com


                                               


                                                                                                February 26, 2013


By E-Mail


Mr. Steve Crocker, Chairman of the Board


Mr. Fadi Chehade, President & CEO


Internet Corporation for Assigned Names and Numbers


12025 Waterfront Drive, Suite 300


Los Angeles, CA 90094-2536


Re: Board Consideration of Arab Center for Dispute Resolution’s Proposal to    Serve as UDRP Provider


 


Dear Mr. Crocker and Mr. Chehade:


I am writing on behalf of the members of the Internet Commerce Association (ICA). ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.


ICA is also a member of ICANN’s Business Constituency and I participate on ICA’s behalf in the BC’s activities as well as in ICANN’s public comment, working group, and related processes for policy development and implementation.


ICA has become aware that the ICANN Board of Directors is to consider the application of the Arab Center for Dispute Resolution (ACDR) to become an accredited provider of UDRP arbitration services at its Special Meeting scheduled for February 28, 2013 (https://www.icann.org/en/groups/board/documents/agenda-28feb13-en.htm). As this matter is on the Consent Agenda we presume that the Board is prepared to approve this accreditation.


The ICA hereby requests that the Board:



  • ·         Defer action on this matter until at least its next scheduled meeting.

  • ·         Publish the pending ACDR proposal for community review and comment.

Our reasons for this request are:



  • ·         The ACDR proposal was submitted for community comment nearly two and a half years ago, on September 28, 2010 (http://www.icann.org/en/news/announcements/announcement-28sep10-en.htm). So far as we are aware (and we have searched the ICANN website in this regard) there have been no further official statements by ICANN on this matter until its appearance on the Consent Agenda.

  • ·         The majority of comments received on the ACDR application either opposed it or requested substantial revisions and clarifications. ICA’s comment letter opposed any new accreditations of UDRP providers and also cited material deficiencies in the ACDR application (http://forum.icann.org/lists/acdr-proposal/msg00005.html). The Summary of the statement filed by the Business Constituency stated “The Business Constituency (BC) cannot support approval of this or any other UDRP accreditation application at this time on the grounds that no new UDRP providers should be accredited until ICANN implements a standard mechanism for establishing uniform rules and procedures and flexible means of delineating and enforcing arbitration provider responsibilities.” (http://forum.icann.org/lists/acdr-proposal/msg00004.html). And the comment of the IP Constituency noted that “any enthusiasm for the ACDR’s proposal must be tempered by the desire to ensure a predictable and equitable system of domain name dispute resolution – as opposed to any profit-driven “race to the bottom” between UDRP providers”, and listed numerous revisions and suggestions that it wished to see made to the ACDR proposal. (http://forum.icann.org/lists/acdr-proposal/msg00006.html)

  • ·         The ICANN staff Summary and Analysis of the comments received stated:

The commenters were of varied opinions on the ACDR’s proposal: Three commenters (George Kirikos, the BC and the ICA) were expressly against the ACDR proposal. The IPC noted its conditional approval subject to incorporation of suggested changes, and only one commenter (Alramahi) submitted unqualified support for the ACDR proposal.


It also noted:


Some areas identified by the IPC and ICA include:


(i) Provision of more detail on track record in handling alternative dispute resolution proceedings;


(ii) A more precise statement regarding the case load administrative capacity that the ACDR anticipates handling;


(iii) Better documentation regarding the creation of training materials;


(iv) Revision of specific terms in the supplemental rules to better align with the UDRP process;


(v) Revision to the ACDR’s fee structure; and


(vi) Release of confidential internal operating procedures.


ICANN is providing the ACDR with a copy of this summary and analysis so that the ACDR may determine how to respond and whether it wishes to revise any portion of its proposal. When a revised proposal is received, the proposal will be reviewed to determine if further public comment is advisable prior to presentation to the Board for consideration. Further comment may not be necessary, for example, if the ACDR elects to not alter its fee schedule, as the UDRP allows providers to set their own fees.


Separate from the ACDR proposal, ICANN has been undertaking a process to review its relationships with UDRP providers, and that review is ongoing. (Emphasis added)


As noted above, nearly two and a half years have passed since the ACDR proposal was put out for public comment. The majority of comments opposed approval or requested substantial revision and additional information. Now the ACDR proposal has suddenly appeared on the Board’s Consent Agenda with no information presented to the ICANN community as to whether any modifications have been made to the original ACDR proposal, and whether any additional clarifying information has been submitted.


Under these circumstances, proceeding with the ACDR approval at the Board’s February 28th meeting would not be consistent with ICANN’s commitment to transparency and accountability. That is why we are requesting a deferral of Board action on this matter as well as publication of the pending proposal of the ACDR for community review and comment.


ICA wishes to emphasize that we understand the potential benefits of additional regional UDRP arbitration entities as global Internet use continues to grow, and have no quarrel with the appointment of such additional providers — once a standard agreement is in place to assure that procedural and substantive implementation of the Uniform Dispute Resolution Policy is in fact uniform no matter which arbitrator is involved. We have long voiced support for overall UDRP reform of at least a procedural nature to better ensure uniform application of this critically important ICANN policy.


We also note that while the staff Summary and Analysis refers to an ongoing review process to review ICANN’s relationships with UDRP providers we know of no information being provided to the community in regard to the status or results of such a review. If such a review has indeed been undertaken the community should be informed of its status and all relevant information pertaining to it. If such a review process has been halted or remains incomplete then we suggest it be accorded a high priority for near-term completion.


Thank you for considering our views in regard to this important pending matter before the Board. We ask that this letter be shared with all other members of the ICANN Board.


 


Sincerely,


Philip S. Corwin


Counsel, Internet Commerce Association